Philip Morris USA Inc. v. domain registration
Claim Number: FA1509001636384
Complainant is Philip Morris USA Inc. (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, District of Columbia, USA. Respondent is domain registration (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <medicalmarijuanamarlborocigarettes.org>, <medicalmarijuanamarlborocigarettes.nyc>, <medicalmarijuanamarlborocigarettes.net>, <medicalmarijuanamarlborocigarettes.mobi>, <medicalmarijuanamarlborocigarettes.com>, <marlboromarijuanacigarettes.org>, <marlboromarijuanacigarettes.nyc>, <marlboromarijuanacigarettes.net>, <marlboromarijuanacigarettes.mobi>, <marlboromarijuanacigarettes.com.co>, <marlboromarijuanacigarettes.forsale>, <marlboromarijuanacigarettes.ninja>, <marlboromarijuanacigarettes.tv>, <medicalmarijuanamarlborocigarettes.com.co>, <medicalmarijuanamarlborocigarettes.forsale>, <medicalmarijuanamarlborocigarettes.ninja>, and <medicalmarijuanamarlborocigarettes.tv>, registered with Godaddy.Com, Llc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2015; the Forum received payment on September 3, 2015.
On September 4, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <medicalmarijuanamarlborocigarettes.org>, <medicalmarijuanamarlborocigarettes.nyc>, <medicalmarijuanamarlborocigarettes.net>, <medicalmarijuanamarlborocigarettes.mobi>, <medicalmarijuanamarlborocigarettes.com>, <marlboromarijuanacigarettes.org>, <marlboromarijuanacigarettes.nyc>, <marlboromarijuanacigarettes.net>, <marlboromarijuanacigarettes.mobi>, <marlboromarijuanacigarettes.com.co>, <marlboromarijuanacigarettes.forsale>, <marlboromarijuanacigarettes.ninja>, <marlboromarijuanacigarettes.tv>, <medicalmarijuanamarlborocigarettes.com.co>, <medicalmarijuanamarlborocigarettes.forsale>, <medicalmarijuanamarlborocigarettes.ninja>, and <medicalmarijuanamarlborocigarettes.tv> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@medicalmarijuanamarlborocigarettes.org, postmaster@medicalmarijuanamarlborocigarettes.nyc, postmaster@medicalmarijuanamarlborocigarettes.net, postmaster@medicalmarijuanamarlborocigarettes.mobi, postmaster@medicalmarijuanamarlborocigarettes.com, postmaster@marlboromarijuanacigarettes.org, postmaster@marlboromarijuanacigarettes.nyc, postmaster@marlboromarijuanacigarettes.net, postmaster@marlboromarijuanacigarettes.mobi, postmaster@marlboromarijuanacigarettes.com.co, postmaster@marlboromarijuanacigarettes.forsale, postmaster@marlboromarijuanacigarettes.ninja, postmaster@marlboromarijuanacigarettes.tv, postmaster@medicalmarijuanamarlborocigarettes.com.co, postmaster@medicalmarijuanamarlborocigarettes.forsale, postmaster@medicalmarijuanamarlborocigarettes.ninja, postmaster@medicalmarijuanamarlborocigarettes.tv. Also on September 10, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the disputed domain names were registered by an entity known as “domain registration” and with the same email address and phone number and using one of two addresses. Additionally, the websites associated with each disputed domain name resolve to the exact same website with a “website coming soon!” message. The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled by a single Respondent who is using multiple aliases in satisfaction of Paragraph 3(c) of the Rules.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the MARLBORO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 68,502, registered Apr. 14, 1908). The mark is used in connection with the sale of cigarettes. The disputed domain names are confusingly similar to the MARLBORO mark because the domain names contain the entire mark and add various generic terms as well as different generic top-level domains (“gTLDs”) and country code top-level domains (“ccTLDs”).
Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain names, nor is Respondent a licensee of Complainant. Further, Respondent has failed to actively use the domain names.
Respondent has engaged in bad faith registration and use. Respondent has failed to actively use the disputed domain names and had actual knowledge of Complainant’s trademark rights at the time the domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Philip Morris USA Inc., of Richmond, VA, USA, is the owner of USA registrations for the MARLBORO trademark which it has used continuously since at least as early as 1908 in association with the manufacturing, marketing and selling of cigarettes. Complainant also owns the <marlboro.com> website which is utilized to provide additional information and special offers related to its products.
Respondent is Domain Registration of Dunnellon, FL, and Flushing NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that <medicalmarijuanamarlborocigarettes.org>, <medicalmarijuanamarlborocigarettes.nyc>, <medicalmarijuanamarlborocigarettes.net>, <medicalmarijuanamarlborocigarettes.mobi>, <medicalmarijuanamarlborocigarettes.com>, <marlboromarijuanacigarettes.org>, <marlboromarijuanacigarettes.nyc>, <marlboromarijuanacigarettes.net>, <marlboromarijuanacigarettes.mobi>, <marlboromarijuanacigarettes.com.co>, <marlboromarijuanacigarettes.forsale>, <marlboromarijuanacigarettes.ninja>, <marlboromarijuanacigarettes.tv>, <medicalmarijuanamarlborocigarettes.com.co>, <medicalmarijuanamarlborocigarettes.forsale>, <medicalmarijuanamarlborocigarettes.ninja>, and <medicalmarijuanamarlborocigarettes.tv> were all registered on or about May 7, 2015.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registered the MARLBORO mark with the USPTO (e.g., Reg. No. 68,502, registered Apr. 14, 1908). The mark is used in connection with the sale of cigarettes. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the disputed domain names are confusingly similar to the MARLBORO mark. Complainant properly notes that some of the domain names add generic top-level domains (“gTLDs”), such as “.com,” “.net,” and “.org,” all of which are incapable of distinguishing the domain name from the mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Also, the addition of a country code top-level domain (“ccTLD”)—as exemplified in the <medicalmarijuanamarlborocigarettes.com.co> and <marlboromarijuanacigarettes.com.co> domain names—is also irrelavent for Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Furthermore, Complainant notes that the remaining domain names contain various other gTLDs, such as “.nyc,” “.mobi,” “.forsale,” “.ninja,” and “.tv.” Prior panels have found the addition of “.forsale,” “.nyc,” and “.tv” to be of no assistance for respondents in attempting to differentiate the domain name from the mark. See Ashley Furniture Industries, Inc. v. Steve Olson a/k/a Beth Moser for Steve Olson / AZ Home Furniture, FA 1622176 (Nat. Arb. Forum July 21, 2015) (finding the addition of “.forsale” in the <ashleyfurniture.forsale> domain name to be inconsequential); see also Ottomanelli Bros. Ltd. v. Mary Ottomanelli / S. OTTOMANELLI & SONS INC, FA 1614337 (Nat. Arb. Forum June 5, 2015) (finding “.nyc” to be incapable of providing distinguishing relief when comparing the <ottomanelli.nyc> domain name to the OTTOMANELLI mark); see also World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (finding that the addition of “.tv” “[d]oes not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). Additionally, past panels have found that the addition of any gTLD will always fail to provide any distinguishing relief. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel here finds that all of the top-level domains that Respondent has added in this dispute are insufficient to distinguish the domain names from the MARLBORO mark.
Complainant notes that all of the domain names contain the MARLBORO mark and add some combination of the generic or descriptive terms “medical,” “marijuana,” “and cigarettes.” Previous panels have found that the addition of generic or descriptive terms do not remove those domain name from the realm of confusing similarity when the domain name also contains the entire trademark at issue. See generally Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel here finds that all of the disputed domain names are confusingly similar to the MARLBORO trademark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the MARLBORO mark in domain names. The Panel notes that “domain registration” is listed as the registrant of record for the disputed domain names. The Panel notes further that the record lacks any evidence that Respondent is either commonly known by the disputed domain names or in possession of licensing rights. Based upon Respondent’s failure to provide any support for its claim, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent has failed to make active use of the disputed domain names. The Panel notes that Complainant has provided evidence that all of the domain names resolve to a webpage that contains a message reading, “Website coming soon!” Prior panels have found that failure to make active use of a domain name indicates a lack of a bona fide offering or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent lacks rights under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent has engaged in bad faith registration and use. While Complainant does not make contentions that neatly fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant asserts that Respondent has failed to actively use the domain names, which is evidence of bad faith. The Panel recalls that Complainant has provided evidence that all of the domain names resolve to a webpage that contains a message reading, “Website coming soon!” Prior panels have found bad faith when the respondent fails to use the domain name. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel finds that Respondent has failed to actively use the domain names and has registered and used the disputed domains in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <medicalmarijuanamarlborocigarettes.org>, <medicalmarijuanamarlborocigarettes.nyc>, <medicalmarijuanamarlborocigarettes.net>, <medicalmarijuanamarlborocigarettes.mobi>, <medicalmarijuanamarlborocigarettes.com>, <marlboromarijuanacigarettes.org>, <marlboromarijuanacigarettes.nyc>, <marlboromarijuanacigarettes.net>, <marlboromarijuanacigarettes.mobi>, <marlboromarijuanacigarettes.com.co>, <marlboromarijuanacigarettes.forsale>, <marlboromarijuanacigarettes.ninja>, <marlboromarijuanacigarettes.tv>, <medicalmarijuanamarlborocigarettes.com.co>, <medicalmarijuanamarlborocigarettes.forsale>, <medicalmarijuanamarlborocigarettes.ninja>, and <medicalmarijuanamarlborocigarettes.tv> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 23, 2015
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